Law Office of Jason H. Rosenblum, PLLC

Intellectually Protecting Your Property ®

What to Know When Changing the Design of a Registered Trademark **Attorney Advertising**

There are lots of reasons why organizations decide to change their company’s trademark or logo design. As a business matures, the company could decide it wants to rebrand or change direction to attract a different type of customer. Whatever the driving force behind this decision, as a Trademark Lawyer, I’m here to help you understand what to keep in mind when you choose to change the design of your trademark.

What happens to your existing registered trademark design?

In order to maintain a registration at the US Patent and Trademark Office (USPTO) you must continue to use the trademark as registered. First, you should decide whether or not you will continue to use your original trademark design.

If you plan to just change the color of  the existing trademark…

If you decide to retain your existing trademark shape and design, but only want to change the color you might still be able to continue under the current registration, so long as you did not claim color as a feature to your trademark registration.  If you did claim color or you plan to change the design and shape then you would not be able to renew your registration. If you desire to protect the new design you will need to file a new application for the changed design with the USPTO.

Also, if you plan to extend your trademark’s use to different services or goods, then you will not be able to amend the old registration to do this. Instead, you will need to file a new trademark application that specifies the additional services or goods that your trademark will be used on.

What are additional considerations to changing a registered trademark design

If you have a warehouse full of inventory that has your existing trademark attached to your goods, then you might want to consider the option to gradually phase out your existing trademark as you rebrand. The obvious factor that needs consideration is financial: for some, a phased approach presents the most cost-effective solution, but for others, it may be necessary to pull the trigger all at once.

What about third-party trademark licenses?

If your organization has already licensed the existing trademark to external parties, and you no longer intend on using it, then you will need to take steps to revoke any such licenses. For the new trademark design, you should also consider executing new licenses if you would like to permit third parties to use it.

More About Intent-to-Use (ITU) Applications

If you have chosen a phased approach for the introduction of your new trademark, then you should consider filing an intent-to-use application. The US Patent and Trademark Office allows applicants to file for a trademark design even when that mark is not yet in use, as long as there is a ‘good faith intention’ to use it in the future.

One of the major advantages of completing an ITU application is being able to gain a priority date over another potential applicant.

Also note, you can do this regardless of whether you have used the trademark in commerce or not. If this route is chosen, please be aware that full trademark protection will not be activated for the new trademark design until you submit evidence to the USPTO that clearly shows the use of that trademark in commerce. You will also need to pay fees, and you will have an additional filing deadline imposed once the evidence is submitted before any full trademark protection is granted.

Which Path Is Best for Your Business or Brand?

At the start of this post, I set out to inform you of some of the things you need to know and consider if you wanted to change a trademark design. However, the path you choose will ultimately depend on your company’s unique situation, needs, and budget concerns. We are here to help you evaluate all of your options to ensure that you are changing your trademark in a safe and cost-effective way. To get started, simply call us at (888) 666-0622 to schedule a consultation in-person at our Charleston, SC office, or we can meet with you via phone or video chat wherever you are located in the United States.

 

DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.

 

Leave a Reply

You must be logged in to post a comment.

To schedule a complimentary needs assessment call click here.

Address

Law Office of Jason H. Rosenblum, PLLC
Physical and Mailing Address:
3 Broad Street, Suite 320
Charleston, South Carolina 29401

Remote Office (By Appointment Only):
155 Water Street, Suite 618
Brooklyn, New York 11201
Phone: (718) 246-8482

Disclaimer